WORLD TRADE  
ORGANIZATION   
IP/C/W/569 
5 March 2012 
 (12-1243) 
Council for Trade-Related Aspects of 
Intellectual Property Rights Original: Spanish 
 
 
 
AUSTRALIA'S TOBACCO PLAIN PACKAGING BILL 2011 
 
Communication from the Dominican Republic 
 
 
This document reproduces the statement of th e delegation of the Dominican Republic under 
item M (Tobacco Plain Packaging Bill 2011 and its c onsistency with the TRIPS Agreement) of the 
agenda of the TRIPS Council mee ting of 28 and 29 February and is being circulated at its request. 
 
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I. INTRODUCTION 
1. The Dominican Republic wishes to reiterate its serious concern at the plain packaging 
measures for tobacco products adopted by Australia.1 
2. The Dominican Republic has already expressed its  concern both to the TRIPS Council and to 
the TBT Committee.2  Several WTO Members have also questioned these unprecedented measures.3  
So far, Australia has not responded satisfactorily to these concerns but has only provided incomplete 
replies that fail to show the existence of any solid evidence used as a basis for these measures. 
3. Australia's plain packaging measures are a thr eat to many intellectual property rights which 
are vital for international trade and should be a matter of concern to each and every Member.  In 
particular, these measures are inconsistent with Au stralia's obligations under the TRIPS Agreement 
and the Paris Convention for the Protection of Indu strial Property ("Paris Convention"), which forms 
part of the TRIPS Agreement. 
II. IMPACT OF THE MEASURES 
4. For any product that can be lawfully sold for consumption, registered trademarks, 
geographical indications and other elements that form  part of a product's packaging play an important 
role in providing information on products and produ cers, which is essential for consumers.  Such 
information enables consumers to differen tiate and choose between competing products. 
                                                      
1 Namely, the Tobacco Plain Packaging Act 2 011 (No. 148, 2011) and the Trade Marks 
Amendment (Tobacco Plain Packaging) Act 2011 (No.  149, 2011), which r eceived Royal Assent on 
1 December 2011.  The regulations on the plain packagi ng of tobacco products for cigarettes and the packaging 
of cigarettes were enacted on 7 December 2011.  Public consultations on the regulations for cigars and other 
tobacco products have been completed and the relevant regulations are being enacted. 
2 IP/C/M/66;  IP/C/W/565;  G/TBT/W/339;  G/TBT/W/346. 
3 IP/C/M/66;  IP/C/W/567;  G/TBT/M/54;  G/TBT/M/55;  G/TBT/W/336;  G/TBT/W/338;  
G/TBT/W/347. IP/C/W/569 
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  5. Australia's plain packaging measures will eliminat e practically all the distinctive features of 
tobacco sector products by banning designs and trademarks, as well as by requiring packaging for 
different tobacco products to be virtually identical.  These measures will, therefore, negate intellectual 
property rights, preventing consumers from obtai ning basic information on products they may 
lawfully purchase, thereby creating confusion in  the market and lessening the opportunities for 
competition among imported tobacco products. 
6. At the same time, these measure s will not succeed in promoting public health goals.  On the 
contrary, it is expected that they will have serious  negative consequences.  Tobacco consumption will 
increase, instead of decreasing, as prices fall becau se all tobacco products look virtually the same.  
Furthermore, plain packaging will make it easier  to counterfeit products and market them. 
7. Instead of adopting such inappropriate and extreme measures to reach the objectives sought, 
Australia should focus on other measures available to it and which would be really effective in 
promoting public health.  Such measures would no t negate intellectual property rights related to 
lawful products and would not undermine the be nefits given to consumers by such rights. 
III. LEGAL CONSEQUENCES:  THE TRIPS AGREEMENT AND THE PARIS 
CONVENTION FOR THE PROTECTI ON OF INDUSTRIAL PROPERTY 
8. The Dominican Republic considers that Austra lia's plain packaging measures for tobacco 
products would violate Articles 20, 22.2(b) and 24. 3 of the TRIPS Agreement, as well as Article 10 bis 
of the Paris Convention.
4 
9. According to Article 20 of the TRIPS Agreement,  the "use" of registered trademarks relating 
to tobacco products would be "encumbered" by "speci al requirements" determined by Australia's plain 
packaging measures for tobacco produc ts.  Australia intends to prohibit the use of any design feature 
of the registered trademark, allowing only me ntion of the brand name and the variety in a 
predetermined location, in a predetermined font st yle and size on an identical background.  These 
special requirements authorize the use of registered tr ademarks in a "special form" that is "detrimental 
to [the trademark's] capability to distinguish the goods or services of one undertaking from those of 
other undertakings". 
10. On several occasions, Australia has contended th at the measures in question are justified by 
public health objectives, and has referred to a num ber of studies.  The Dominican Republic reiterates 
that it is its understanding that the factual a nd scientific evidence for these measures has been 
challenged in public documents that were submitt ed to the Australian Government in a timely 
manner.5  Australia has still not explained to member s of this Council how it justifies the plain 
packaging measures in view of the lack of evidence. 
11. Moreover, Australia's plain packaging measures would also violate Article 10 bis of the 
Paris Convention, which prohibits "all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a 
competitor".  The plain packaging measures pose a serious risk of confusion among competing 
tobacco products because Australia will impose the u se of virtually identical packaging for all tobacco 
products.  For similar reasons, the plain packaging m easures would also violate Article 22.2(b) of the 
TRIPS Agreement - which refers back to Article 10 bis of the Paris Convention - by creating 
confusion in relation to geographical indications. 
                                                      
4 See also IP/C/W/565. 
5 IP/C/W/565;  G/TBT/W/346.  IP/C/W/569 
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  12. Lastly, the Dominican Republic decided to make  use of the legal possibilities provided in the 
WTO and to incorporate them into its domestic legisl ation in order to give traditional products that are 
well known in domestic and international markets co mpetitive advantages, for example, geographical 
indications.  The Dominican Republic therefore has the pleasure of informing this Council that the 
Tobacco Institute (INTABACO), the Republic's cigar producers, together with the National Industrial 
Property Office (ONAPI), have developed the Domi nican Republic's first geographical indication, 
"Cigarros Dominicanos ", the fruit of two years of joint work.  It is intended to identify and highlight 
the quality of our cigars throughout the world, so  we consider that Australia's plain packaging 
measures would also violate Article 24.3 of th e TRIPS Agreement, which prohibits WTO Members 
from "[diminishing] the protection of geographical  indications that existed in that Member 
immediately prior to the date of entry into for ce of the WTO Agreement [1 January 1995]".  By 
eliminating the right to use geographical indications for the retail sale of tobacco products, Australia 
would violate this obligation.  The plain packaging measures would be detrimental to this geographical indication in Australia. 
13. For the foregoing reasons, the Dominican Republic  urges Australia to honour its obligations 
under the TRIPS Agreement. 
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